On April 27, 2021, United States District Judge Brian M. Cogan (E.D.N.Y.) granted Plaintiff Leviton Manufacturing Co., Inc. ("Leviton") motion for a new trial based on the Court's exclusion of secondary indicia of nonobviousness.

In a prior patent lawsuit, Defendant Pass & Seymour, Inc. ("P&S") and Leviton entered into a Settlement and Licensing Agreement that required P&S to pay Leviton royalties on any products that infringe U.S. Patent No. 7,463,124 ("the '124 patent"), which is directed to an improved ground-fault circuit interrupt circuit breaker. Leviton sued for breach of that agreement and sought unpaid royalties. P&S counterclaimed that the '124 patent was invalid as being obvious. The jury agreed.  However, during trial, Leviton was precluded from presenting evidence of secondary indicia of nonobviousness even though the Court allowed the jury to consider testimony supporting P&S's arguments regarding obviousness.

In response to Leviton's motion for a new trial, the Court determined that it erroneously precluded Leviton from presenting evidence of secondary considerations of nonobviousness to the jury. The Court acknowledged that "[t]he decision to keep this evidence from the factfinder was error on my part" and noted that it was for the jury to determine whether there was an appropriate nexus between the claims of the '124 patent and the secondary considerations. The Court's ruling "constituted error and unfairly prejudiced Leviton." As such, the Court determined that Leviton was entitled to a new trial in which it could present evidence of secondary considerations of nonobviousness. 

The case is Leviton Mfg. Co. v. Pass & Seymour, Inc., No. 17-cv-46 (BMC) (E.D.N.Y. Apr. 27, 2021).